- Google LLC v. Valtrus Innovations LimitedInstitution deniedPTAB · Jan 3, 2023 · IPR2022-01197 · APJ Sheldon M Mcgee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the Ogawa grounds and § 325(d) barred the Vea grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has not met that standard on this record. slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“framework set forth under Advanced Bionics, LLC v. Med-El Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Under that framework, we must first determine whether the same or substantially the same art or arguments previously were presented to the Office. If so, we must then determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“12 Dr. Madisetti’s testimony here is entitled to little to no weight as it merely parrots the Petition. 37 C.F.R. § 42.65(a).” slip op. at 19
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 6,816,809 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01270 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of review of claims 2–5, 11–14, 22, 23, and 26–28 under § 325(d) because substantially the same prior art was previously presented and material Office error was not shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Because it was submitted in an IDS during prosecution of the ’380 patent, Sourcefire qualifies as art that was “previously presented” to the Office.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Bionics framework, and based on the particular circumstances here, we conclude that the same or substantially the same prior art as in the Petition was presented previously to the Office, and Petitioner has not demonstrated that the Office erred in a manner material to patentability of the challenged claims. Accordingly, we determine that discretionary denial of the Petition under 35 U.S.C. § 325(d) is appropriate. IV. CONCLUSION For the foregoing reasons, we exercise our discretion to deny institution under 35 U.S.C. § 325(d). V. ORDER Accordingly, it is ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 18
Discretionary denialPatents in suitUS 10,735,380 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01156 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of IPR challenging claims 1, 6–10, 15–21, 24, 25, 29, and 30, because the same prior art was previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“presented to the Office. Section 325(d) states, in relevant part, “[in] determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 9
Discretionary denialPatents in suitUS 10,735,380 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 20, 2022 · IPR2021-01155 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution of IPR challenging claims 1–20 under § 325(d), finding the asserted art and arguments were previously presented and Petitioner failed to show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Examiner during prosecution of the ’343 patent and that Mantripragada is cumulative to Buck, which was considered during prosecution of the ’343 patent. We further find that Patent Owner’s argument during prosecution that the packet transformation function is configured “to prevent an exfiltration operation” resulted in allowance of the claims of the ’343 patent, which overlaps with the argument that Patent Owner makes in this case against Petitioner’s challenges. Prelim. Resp. 35–36. Petitioner has not shown that the two-stage filtering process was a basis for the Examiner’s allowance of the claims of the ’343 patent over the cited prior art. We, therefore, find that the same or substantially the same prior art, and the same or substantially the same arguments, previously were presented to the Office under the first part of the Advanced Bionics framework.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Petitioner’s declarant testifies regarding the prosecution history of the ’343 patent. Ex. 1003 ¶¶ 85–90. He concludes that “the ’343 Patent claims were apparently allowed because the Examiner concluded that the prior art of record failed to disclose a two-stage packet filtering process,” mirroring Petitioner’s argument. Id. ¶ 90. Petitioner’s declarant does not indicate how the facts support this conclusion. As mentioned, Patent Owner’s argument during prosecution leading to allowance was that the ’343 patent’s claims recite applying the packet transformation function configured to prevent an exfiltration operation. Ex. 1002, 1614–1615, 1639. Petitioner’s declarant does not explain sufficiently where in the prosecution history Patent Owner argued that a two-stage packet filtering process distinguished the ’343 patent’s claims over the prior art, or where the Examiner allowed the claims because of two-stage packet filtering. Accordingly, lacking evidentiary support, the declarant’s testimony is entitled to little or no weight on this point. 37 C.F.R. § 42.65(a). Thus, we see no additional evidence or facts in the Petition that warrant reconsideration of the prior art. Therefore, we find that Petitioner has not demonstrated that the Office erred in a manner material to the patentability of the challenged claims under the second part of the Advanced Bionics framework.” slip op. at 18
Discretionary denialPatents in suitUS 10,567,343
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.